USPTO Patents Application 09870801

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WILLIAM L. ANTHONY (State Bar No. 106908)
ERIC L. WESENBERG (State Bar No. 139696)
MARK R. WEINSTEIN (State Bar No. 193043)
ORRICK, HERRINGTON & SUTCLIFFE, LLP
1000 Marsh Road
MenloPark,CA 94025
Telephone: (650)614-7400
Facsimile: (650)614-7401

STEVEN ALEXANDER (admitted Pro Hac Vice)

KRISTIN L. CLEVELAND (admitted Pro Hac Vice)

JAMES E. GERINGER (admitted Pro Hac Vice)

JOHN D. VANDENBERG

KLARQUIST SPARKMAN, LLP

One World Trade Center, Suite 1600

121 S.W. Salmon Street

Portland, OR 97204

Telephone: (503) 226-7391

Facsimile: (503)228-9446

Attorneys for Defendant and Counterclaimant,
MICROSOFT CORPORATION

UNITED STATES DISTRICT COURT
NORTHERN DISTRICT OF CALIFORNIA
OAKLAND DIVISION

INTERTRUST TECHNOLOGIES
CORPORATION, a Delaware corporation,

Plaintiff,

MICROSOFT CORPORATION, a
Washington corporation,

Defendant.

MICROSOFT CORPORATION, a
Washington corporation,

Counterclaimant,

v.

INTERTRUST TECHNOLOGIES
CORPORATION, a Delaware corporation,

Counter Claim-Defendant.

CASE NO. C01-1640 SBA

MICROSOFT CORPORATION'S
AMENDED ANSWER AND
COUNTERCLAIMS TO
INTERTRUST'S THIRD AMENDED
COMPLAINT

DOCSSV 1:1 65989.1

Microsoft Corporation's Amended Answer and
Counterclaims to intertrust's third amended
complaint: Case No. C 01-1640 SBA

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Defendant Microsoft Corporation ("Microsoft") answers the Third Amended
Complaint of InterTrust Technologies Corporation ("InterTrust") as follows:

1 . Microsoft admits that the Third Amended Complaint purports to state a
cause of action under the patent laws of the United States, 35 United States Code, §§ 271 and

28 1 . Microsoft denies that it has infringed or now infringes the patents asserted against Microsoft
in the Third Amended Complaint. Microsoft denies any and all remaining allegations of
paragraph 1 of the Third Amended Complaint.

2. Microsoft admits that the Third Amended Complaint purports to state a
cause of action over which this Court has subject matter jurisdiction under 28 U.S.C. §§ 1331 and
1338(a).

3 . Microsoft admits, for purposes of this action only, that venue is proper in
this judicial district. Microsoft denies any and all remaining allegations of paragraph 3 of the
Third Amended Complaint.

4. On information and belief, Microsoft admits the allegations of paragraph 4
of me Third Amended Complaint.

5. Microsoft admits the allegations of paragraph 5 of me Third Amended

Complaint

6. Microsoft admits, for purposes of this action only, that it transacts business
in this judicial district. Microsoft denies any and all remaining allegations of paragraph 6 of the
Third Amended Complaint

7. Microsoft admits that on its face the title page of U.S. Patent No. 6,185,683
Bl ("the *683 Patent") states that it was issued February 6, 2001, is entitled 'Trusted and secure
techniques, systems and methods for item delivery and execution," and lists "InterTrust
Technologies Corp." as the assignee. Microsoft denies that the *683 Patent was duly and lawfully
issued. Microsoft further denies any and all remaining allegations of paragraph 7 of the Third
Amended Complaint.

Microsoft Corporation's Amended answer and
Counterclaims to intertrust's third amended
complaint: Case No. C 01-1640 SB A

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8. Microsoft admits that on its face the title page of U.S. Patent No. 6,253,193
1 ("the M93 Patent") states that it was issued June 26, 2001, is entitled "Systems and methods

>r the secure transaction management and electronic rights protection," and lists "InterTrust
echnologies Corporation" as the assignee. Microsoft denies that the 493 Patent was duly and
iwfully issued. Microsoft further denies any and all remaining allegations of paragraph 8 of the
hird Amended Complaint.

9. Microsoft admits that on its face the title page of U.S. Patent No. 5,940,504
'the '504 Patent") states that it was issued August 17, 1999, and is entitled '"Licensing
lanagement system and method in which datagrams including an address of a licensee and
idicative of use of a licensed product are sent from the licensee's site." Microsoft denies that the
504 Patent was duly and lawfully issued. Microsoft lacks sufficient information to admit or deny
ny and all remaining allegations of paragraph 9 of the Third Amended Complaint.

1 0. Microsoft admits that on its face the title page of U.S. Patent No. 5,920,86 1
the '861 Patent") states that it was issued July 6, 1999, is entitled "Techniques for defining
sing and manipulating rights management data structures," and lists "InterTrust Technologies
>>rp," as the assignee. Microsoft denies that the '861 Patent was duly and lawfully issued,
/ticrosoft further denies any and all remaining allegations of paragraph 10 of the Third Amended
Complaint

1 1 . Microsoft admits that on its face the title page of U.S. Patent No. 5,892,900
"the '900 Patent") states that it was issued April 6, 1999, is entitled "Systems and methods for
ecure transaction management and electronic rights protection " and lists "InterTrust
rechnologies Corp." as the assignee. Microsoft denies that the '900 Patent was duly and lawfully
ssued. Microsoft further denies any and all remaining allegations of paragraph 1 1 of the Third
\mended Complaint.

12. Microsoft admits that on its face the title page of U.S. Patent No. 5,982,891
"the '891 Patent' *) states that it was issued November 9, 1999, is entitled "Systems and methods
for secure transaction management and electronic rights protection," and lists "InterTrust
rechnologies Corp " as the assignee. Microsoft denies that the '891 Patent was duly and lawfully

DOCSSVi ;160096.I MICROSOFT CORPORATION'S AMEKDED ANSWER AND

Counterclaims to intertrust/s third amended
"2* complaint. Case No. C 01-1640 SBA

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ssued. Microsoft further denies any and all remaining allegations of paragraph 12 of the Third
Amended Complaint.

13. Microsoft admits that on its face the title page of U.S. Patent No. 5,917,912
"the '912 Patent") states that it was issued June 29, 1999, is entitled "System and methods for
;ecure transaction management and electronic rights protection," and lists "InterTrust
rechnologies Corp." as the assignee. Microsoft denies that the 4 912 Patent was duly and lawfully
ssued. Microsoft further denies any and all remaining allegations of paragraph 13 of the Third
Amended Complaint.

14. Microsoft repeats and reasserts its responses to paragraphs 1-7 of the Third

Amended Complaint, as if fully restated herein.

1 5. Microsoft admits that the Third Amended Complaint purports to state a
;ause of action under 35 U.S.C. §§ 271 and 281. Microsoft denies that it has infringed or now
nfiringes the patents asserted against Microsoft in the Third Amended Complaint. Microsoft
lenies any and all remaining allegations of paragraph 15 of the Third Amended Complaint.

16. Microsoft denies any and all allegations of paragraph 16 of the Third
\mended Complaint.

17. Microsoft denies any and all allegations of paragraph 17 of the Third

\mended Complaint.

1 8. Microsoft denies any and all allegations of paragraph 18 of the Third

Amended Complaint

19. Microsoft denies any and all allegations of paragraph 19 of the Third

Amended Complaint

20. Microsoft denies any and all allegations of paragraph 20 of the Third

Amended Complaint

21 . Microsoft repeats and reasserts its responses to paragraphs 1-6 and 8 of the
Third Amended Complaint, as if fully restated herein.

22. Microsoft admits that the Third Amended Complaint purports to state a

cause of action under 35 U.S.C. §§ 271 and 281 . Microsoft denies that it has infringed or now
docssvl : 160096.1 microsoft corporation's amended answer and

Counterclaims to intertrust's third amended
"3" complaint: Case No. C 01-1640 SBA

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infringes the patents asserted against Microsoft in the Third Amended Complaint. Microsoft
denies any and all remaining allegations of paragraph 22 of the Third Amended Complaint.

23. Microsoft denies any and aU allegations of paragraph 23 of the Third

Amended Complaint.

24. Microsoft denies any and all allegations of paragraph 24 of the Third

Amended Complaint.

25. Microsoft denies any and all allegations of paragraph 25 of the Third

Amended Complaint.

26. MicrosofHenies^any and all allegations of paragraph 26 of the Third

Amended Complaint.

27. Microsoft denies any and all allegations of paragraph 27 of the Third

Amended Complaint.

28. Microsoft repeats and reasserts its responses to paragraphs 1-6 and 9 of the
Third Amended Complaint, as if fully restated herein.

29. Microsoft admits that the Third Amended Complaint purports to state a
cause of action under 35 U.S.C. § § 27 1 and 281 . Microsoft denies that it has infringed or now
infringes the patents asserted against Microsoft in the Third Amended Complaint. Microsoft
denies any and all remaining allegations of paragraph 29 of the Third Amended Complaint.

30. Microsoft denies any and all allegations of paragraph 30 of the Third
Amended Complaint

31. Microsoft denies any and all allegations of paragraph 31 of the Third

Amended Complaint.

32. Microsoft denies any and all allegations of paragraph 32 of the Third
Amended Complaint.

33. Microsoft denies any and all allegations of paragraph 33 of the Third

Amended Complaint.

34. Microsoft denies any and all allegations of paragraph 34 of the Third

Amended Complaint.

docssvl:! 60096.1 microsoft corporation ' s am embed answer and

Counterclaims to intertrust's third amended
"4" complaint: Case No. C 01-1640 SBA

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35. Microsoft repeats and reasserts its responses to paragraphs 1-6 and 1 0 of
the Third Amended Complaint, as if fully restated herein.

36. Microsoft admits that the Third Amended Complaint purports to state a
cause of action under 35 U.S.C. §§ 271 and 281 . Microsoft denies that it has infringed or now
infringes the patents asserted against Microsoft in the Third Amended Complaint Microsoft
denies any and all remaining allegations of paragraph 36 of the Third Amended Complaint.

37. Microsoft denies any and all allegations of paragraph 37 of the Third
Amended Complaint.

38. Microsoft denies any and all allegations of paragraph 38 of the Third
Amended Complaint.

39. Microsoft denies any and all allegations of paragraph 39 of the Third
Amended Complaint.

40. Microsoft denies any and all allegations of paragraph 40 of the Third

Amended Complaint.

41. Microsoft denies any and all allegations of paragraph 41 of the Third

Amended Complaint.

42. Microsoft repeats and reasserts its responses to paragraphs 1-6 and 1 1 of
the Third Amended Complaint, as if fully restated herein.

43 . Microsoft admits that the Third Amended Complaint purports to state a
cause of action under 35 U.S.C. §§ 271 and 281. Microsoft denies that it has infringed or now
infringes the patents asserted against Microsoft in the Third Amended Complaint. Microsoft
denies any and all remaining allegations of paragraph 43 of the Third Amended Complaint.

44. Microsoft denies any and all allegations of paragraph 44 of the Third
Amended Complaint.

45. Microsoft denies any and all allegations of paragraph 45 of the Third

Amended Complaint.

46. Microsoft denies any and all allegations of paragraph 46 of the Third

Amended Complaint.

DOCSSVl :1 60096.1 MICROSOFT CORPORATION * S AMENDED ANSWER AND

Counterclaims to intektrust's third amended
~ 5 ~ complaint: Case No. C 01-1640 SB A

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47. Microsoft denies any and all allegations of paragraph 47 of the Third

\jnended Complaint.

48. Microsoft denies any.and all allegations of paragraph 48 of the Third

\jnended Complaint.

49. Microsoft repeats and reasserts its responses to paragraphs 1-6 and 12 of
he Third Amended Complaint, as if fully restated herein.

50. Microsoft admits that the Third Amended Complaint purports to state a
>ause of action under 35 U.S.C. §§ 271 and 281. Microsoft denies that it has infringed or now
nfringes the patents asserted agadnstMicrosoft in the Third Amended Compiaint;Microsoft
lenies any and all remaining allegations of paragraph 50 of the Third Amended Complaint.

51. Microsoft denies any and all allegations of paragraph 5 1 of the Third

\mended Complaint.

52. Microsoft denies any and all allegations of paragraph 52 of the Third

\mended Complaint.

53. Microsoft denies any and all allegations of paragraph 53 of the Third

Amended Complaint.

54. Microsoft denies any and all allegations of paragraph 54 of the Third

Amended Complaint

55. Microsoft denies any and all allegations of paragraph 55 of the Third

Amended Complaint.

56. Microsoft repeats and reasserts its responses to paragraphs 1-6 and 13 of
the Third Amended Complaint, as if fully restated herein.

57. Microsoft admits that the Third Amended Complaint purports to state a
cause of action under 35 U.S.C. §§ 271 and 281. Microsoft denies that it has infringed or now
infringes the patents asserted against Microsoft in the Third Amended Complaint. Microsoft
denies any and all remaining allegations of paragraph 57 of the Third Amended Complaint

58. Microsoft denies any and all allegations of paragraph 58 of the Third
Amended Complaint.

docssvl: 1 60096.1 microsoft corporation's amended answer and

Counterclaims to intertrust's third amended
" 6 ~ complaint: Case No. C 01-1640 SBA

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59. Microsoft denies any and all allegations of paragraph 59 of the Third

Amended Complaint.

60. Microsoft denies any and all allegations of paragraph 60 of the Third
Amended Complaint.

61. Microsoft denies any and all allegations of paragraph 61 of the Third
Amended Complaint.

62. Microsoft denies any and all allegations of paragraph 62 of the Third

Amended Complaint.

•--AinFTRMATIVE ANB OTHER DEFENSES
Further answering the Third Amended Complaint, Microsoft asserts the following
defenses. Microsoft reserves the right to amend its answer with additional defenses as further
information is obtained.

First Defense; Noninfringement of the Asserted Patents

63. Microsoft has not infringed, contributed to the infringement of, or induced
the infringement of U.S. Patent No. 6,185,683 Bl ("the '683 Patent"), U.S. Patent No. 6,253,193
Bl ("the '193 Patent"), U.S. Patent No. 5,940,504 ('the '504 Patent"), U.S. Patent No. 5,920,861
("the '861 Patent"), U.S. Patent No. 5,892,900 ("the '900 Patent"), U.S. Patent No. 5,982,891
("the '891 Patent"), or U.S. Patent No. 5,917,912 ("the '912 Patent"), and is not liable for
infringement thereof.

64; 7^ and* aH Micr bsbft products or methods that are accused of

infringement have substantial uses that do not infringe and therefore cannot induce or contribute
to the infringement of the '683 Patent, the '193 Patent, the '504 Patent, the '861 Patent, the '900
Patent, the '891 Patent, or the '912 Patent

Second Defense: Invalidity of the Asserted Patents
65. On information and belief, the '683 Patent, the ' 1 93 Patent, the ' 504 Patent
the '861 Patent, the '900 Patent, the '891 Patent, and the '912 Patent are invalid for failing to
comply with the provisions of the Patent Laws, Title 35 U.S.C., including without limitation one
or more of 35 U.S.C. §§ 102, 103 and 1 12.

DOCSSVl: 160096. 1 MICROSOFT CORPORATION'S AMENDED ANSWER AND

Counterclaims to intertrust's third amended
-1- complaint: Case No. C 01-1640 SBA

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Third Defense; Unavailability of Relief

66. On information and belief, Plaintiff has failed to plead and meet the
requirements of 35 U.SXL§ 271(b) and (c) and is not en titled to any alleged damages prior to
providing any actual notice to Microsoft of the '683 Patent, the '193 Patent, the '504 Patent, the
'861 Patent, the '900 Patent, the '891 Patent, or the '912 Patent.

Fourth Defense: Unavailability of Relief

67. On information and belief, Plaintiff has failed to plead and meet the
requirements of 35 U.S.C. § 284 for enhanced damages and is not entitled to any damages prior to
providing any actaal-noticeloMcrosorVof ^me '68-3;Patent; me '193 Patent,.the '504 Patent, the
'861 Patent, the '900 Patent, the '891 Patent, and/or the '912 Patent and any alleged infringement
thereof.

Fifth Defense: Unavailability of Relief

68. On information and belief, Plaintiff has failed to plead and meet the
requirements of 35 U.S.C. § 287, and has otherwise failed to show that it is entitled to any
damages.

Sixth Defense: Prosecution History Estoppel

69. Plaintiff s alleged causes of action for patent infringement are barred under
the doctrine of prosecution history estoppel, and Plaintiff is estopped from claiming that the '683
Patent, the '193 Patent, the '504 Patent, the '861 Patent, the '900 Patent, the '891 Patent, and/or
the '91 2 Patent covers or includes any accused Microsoft product or method.

Seventh Defense: Dedication to the Public

70. Plaintiff has dedicated to the public all methods, apparatus, and products
disclosed in the '683 Patent, the '193 Patent, the '504 Patent, the '861 Patent, the '900 Patent, the
'891 Patent, and/or the '912 Patent, but not literally claimed therein, and is estopped from
claiming infringement by any such public domain methods, apparatus, and products.

Eighth Defense: Use/Manufacture Bv/For United States Government

71. To the extent that any accused product has been used or manufactured by

or for the United States, Plaintiffs claims and demands for relief are barred by 2 8 U.S.C. § 1498.
docssvu60096.1 microsoft corporation's amended answer and

Counterclaims to djtertrust's third amended
"8" complaint: Case No. C 01-1640 SBA

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Ninth Defense: License

72. To the extent that any of Plaintiff s allegations of infringement are
premised on the alleged use, sale, offer Jor sale, license or offer of license of products that were
manufactured by or for a licensee of InterTrust and/or provided by or to Microsoft by or to a
licensee of InterTrust, such allegations are barred pursuant to license.

Tenth Defense: Acquiescence

73. Plaintiff has acquiesced in at least a substantial part of the Microsoft
conduct alleged to infringe.

— • , ' - Eleventh Defenser -Laches — .—.-r---

74. Plaintiff's claims for relief are barred, in whole or in part, by the equitable
doctrine of laches.

Twelfth Defense; Inequitable Conduct

75. The *861 Patent claims are unenforceable due to inequitable conduct,
including those acts and failures to act set forth in Microsoft's Counterclaim for Declaratory
Judgment of Unenforceability of the '861 Patent, set forth below.

Thirteenth Defense: Inequitable Conduct

76. The '900 Patent claims are unenforceable due to inequitable conduct,
including those acts and failures to act set forth in Microsoft's Counterclaim for Declaratory
Judgment of Unenforceability of the '900 Patent, set forth below.

— ■ - - r Fourteenth Defense: -Unenforceability

77. The claims of the '891 Patent, the '912 Patent, the '861 Patent, the '683
Patent, the '193 Patent and the *900 Patent are unenforceable due to unclean hands, inequitable
conduct and misuse and illegal extension of the patent right, including those acts and failures to
act set forth in Count XI of Microsoft's Counterclaims, set forth below,

///
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///
///

docssvl: 160096.1 microsoft corporation's amended answer and

Counterclaims to intertrust's third amended
complaint: Case No. C 01-1640 SBA

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COUNTERCLAIMS

COUNT I - DECLARATORY
JUDGMENT OF NONINFRINGEMENT

78. This action arises under the patent laws of the United States, Title 35
U.S.C. §§ 1, et seq. This Court has subject matter jurisdiction over this counterclaim under 28
U.S.C §§ 1338, 2201, and 2202.

79. Microsoft Corporation ("Microsoft") is a Washington corporation with its
principal place of business in Redmond, Washington.

80. On information and belief, Plaintiff /Counterclaim Defendant InterTrust
Technologies Corporation ( 4 1nterTrust") is a Delaware corporation with its principal place of
business in Santa Clara, California.

81 . InterTrust purports to be the owner of U.S. Patent Nos. 6,1 85,683 Bl ("the
'683 Patent"), 6,253,193 Bl ("the '193 Patent"), 5,940,504 ("the '504 Patent"), 5,920,861 ( <c the
'861 Patent"), U.S. Patent No. 5,892,900 ("the '900 Patent"), U.S. Patent No. 5,982,891 ("the
'891 Patent"), and U.S. Patent No. 5,917,912 ("the '912 Patent").

82. InterTrust alleges that Microsoft has infringed the *683 Patent, the 8 193
Patent, the '504 Patent, the '861 Patent, the '900 Patent, the '891 Patent, and the '912 Patent.

83. No Microsoft product has infringed, either directly or indirectly, any claim
of the '683 Patent, the ' 193 Patent, the ( 504 Patent, the '861 Patent, the 4 900 Patent, the '891
Patent, or the '9 1 2 Patent, and Microsoft is not liable for infringement thereof.

84. An actual controversy, within the meaning of 28 U.S.C. §§ 2201 and 2202,

exists between Microsoft, on the one hand, and InterTrust, on the other hand, with respect to the

infringement or noninfringement of the '683 Patent, the *193 Patent, the '504 Patent, the '861

Patent, the '900 Patent, the '891 Patent, and/or the '912 Patent.

COUNT n - DECLARATORY
JUDGMENT OF INVALIDITY OF THE '683 PATENT

85. Microsoft repeats and realleges paragraphs 1-5 of its Counterclaims, as if
fully restated herein.

DOCSSVl :160096.1 MICROSOFT CORPORATION * S AMENDED ANSWER AND

Counterclaims to intertrust's third amended
complaint: Case No. C 01-1640 SBA

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86. The '683 Patent, and each claim thereof, is invalid for failing to comply
arith the provisions of the Patent Laws, including one or more of 35 U.S.C. §§ 102, 103 and 1 12.
87 An actual controversy, wittiin the meaning of 28 U.S.C. §§ 2201 and 2202,

sxists between Microsoft, on the one hand, and InterTrust, on the other hand, with respect to

whether the claims of the '683 Patent are valid or invalid.

COUNT HI - DECLARATORY
JUDGMENT OF INVALIDITY OF THE '193 PATENT

88. Microsoft repeats and realleges paragraphs 1-5 of its Counterclaims as if

fully restated herein. __== : —

89. The ' 1 93 Patent, and each claim thereof, is invalid for failing to comply
with the provisions of the Patent Laws, including one or more of 35 U.S.C. §§ 102, 103 and 1 12.

90. An actual controversy, within the meaning of 28 U.S.G. §§ 2201 and 2202,

exists between Microsoft, on the one hand, and InterTrust, on the other hand, with respect to

whether the claims of the '193 Patent are valid or invalid.

COUNT TV - DECLARATORY
JUDGMENT OF INVALIDITY OF THE '504 PATENT

91 . Microsoft repeats and realleges paragraphs 1-5 of its Counterclaims as if

fully restated herein.

92. The '504 Patent, and each claim thereof, is invalid for failing to comply
with the provisions of me Patent Lawsrincludkg one or m ore-of 35 U.S.C. §§ 102, 103 and 112.

93. An actual controversy, within the meaning of 28 U.S.C. §§ 2201 and 2202,

exists between Microsoft, on the one hand, and InterTrust, on the other hand, with respect to

whether the claims of the '504 Patent are valid or invalid.

COUNT V - DECLARATORY
JUDGMENT OF INVALIDITY OF THE '861 PATENT

94. Microsoft repeats and realleges paragraphs 1-5 of its Counterclaims as if
fully restated herein.

DOCSSV1:160096.I

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Microsott Corporation's Amended Answer and
Counterclaims to intertrust's third amended
complaint. Case No. C 01-1640 SBA

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95. The '861 Patent, and each claim thereof, is invalid for failing to comply
with the provisions of the Patent Laws, including one or more of 35 U.S.C. §§ 102, 103 and 112.

96. An actual controversy, within the meaning of 28 U.S.C. §§ 2201 and 2202,

exists between Microsoft, on the one hand, and InterTrust, on the other hand, with respect to

whether the claims of the '861 Patent are valid or invalid.

COUNT VI - DECLARATORY
JUDGMENT OF INVALIDITY OF THE '900 PATENT

97. Microsoft repeats and realleges paragraphs 1 -5 of its Counterclaims as if
fully restated herein.

98. The '900 Patent, and each claim thereof, is invalid for failing to comply
with the provisions of the Patent Laws, including one or more of 35 U.S.C. §§ 102, 103, and 1 12.

99. An actual controversy, within the meaning of 28 U.S.C. §§ 2201 and 2202,

exists between Microsoft, on the one hand, and mterTrust, on the other hand, with respect to

whether the claims of the '900 Patent are valid or invalid.

COUNT VII - DECLARATORY
JUDGMENT OF INVALIDITY OF THE '891 PATENT

1 00. Microsoft repeats and realleges paragraphs 1-5 of its Counterclaims as if
fully restated herein.

101. The '891 Patent, and each claim thereof, is invalid for failing to comply
wtdr the "provisions of 'the Pat«itlawsrincmdmg^ne-ormT>re-T>f35 U.S.C. §§ 102, 103, and 112.

1 02. An actual controversy, within the meaning of 28 U.S.C. §§ 2201 and 2202,

exists between Microsoft, on the one hand, and InterTrust, on the other hand, with respect to

whether the claims of the '891 Patent are valid or invalid.

COUNT VIH - DECLARATORY
JUDGMENT OF INVALIDITY OF THE '912 PATENT

1 03. Microsoft repeats and realleges paragraphs i-5 of its Counterclaims as if
fully restated herein.

1 04. The '912 Patent, and each claim thereof, is invalid for failing to comply

with the provisions of the Patent Laws, including one or more of 35 U.S.C. §§ 102, 103, and 112.
docssvl . 160096.1 microsoft corporation's amended answer and

Counterclaims to intertrust's third amended
"12" complaint: Case No. C 01-1640 SBA

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105. An actual controversy, within the meaning of 28 U.S.C. §§ 2201 and 2202,

exists between Microsoft, on the one hand, and InterTrust, on the other hand, with respect to

whether the claims of the '912 Patent are valid or invalid.

COUNT IX - DECLARATORY JUDGMENT
OF UNENFORCEABILITY OF THE '861 PATENT

1 06. Microsoft repeats and realleges paragraphs 1 -5 of its Counterclaims, as if
fully restated herein.

107. Claims 1-129 of the '861 Patent application (SN 08/805,804), and claims
1-101 of the '861 Patent, were not and are not entitled to the benefit of any application filing date
prior to February 25, 1997, under 35 U.S.C. § 120 or otherwise.

108. "Exhibit A" refers to the document attached as Exhibit A to Microsoft's
counterclaims filed in response to InterTrust's Second Amended Complaint (namely, a reprint of
an article entitled "DigiBox: A Self-Protecting Container for Information Commerce").

109. On information and belief, the content of pages 2-14 of Exhibit A was
presented at a public conference in the United States in July 1 995 .

1 1 0. "Exhibit B" refers to the document attached as Exhibit B to Microsoft's
counterclaims filed in response to InterTrust's Second Amended Complaint (namely, a copy of a
page from an International Application published under the Patent Cooperation Treaty (PCT),
bearing International Publication Number WO 96/27 1 55).

_ . r-_ -11 1 . On information and belief, International Application WO 96/271 55 has, at

all times since its filing date, been owned and controlled by InterTrust or its predecessors in
interest.

1 1 2. International Application WO 96/271 55 (hereafter "the WO 96/271 55
(PCT) publication") was published on September 6, 1996.

1 13. United States Patent No. 5,91 0,987 ("the '987 Patent") issued on June 8,
1 999, from a continuation of an application filed on February 13,1 995.

1 14. The Sibert article is prior art to claims 1-129 of the '861 Patent application
(SN 08/805,804).

DOCSSVl:! 60096.1 MICROSOFT CORPORATION'S AMENDED ANSWER AND

Counterclaims to intertrust's third amended
complaint: Case No. C 01-1640 SBA

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115. The Sibert article is prior art to claims 1-101 of the '861 Patent under 35
U.S.C. § 102(b).

1 16. _The_W_0 96/27.1 55. (PCT) publication is prior art to claims 1-129 of the
*861 Patent application (SN 08/805,804).

117. The WO 96/27155 (PCT) publication is prior art to claims 1-101 of the
*861 Patent under 35 U.S.C. § 102(a).

118. The '987 Patent is prior art to claims 29-129 of the '861 Patent application
(SN 08/805,804).

1 19. The '987 Patent is prior art to claims 1-101 of the '861 Patent, under 35
U.S.C. § 102(e).

120. The Sibert article was material to the patentability of claim 1 of the ' 861
Patent application (SN 08/805,804).

121. The Sibert article was material to the patentability of claims 2-129 of the
'861 Patent application (SN 08/805,804).

122. The WO 96/27155 (PCT) publication was material to the patentability of
claim 1 of the '861 Patent application (SN 08/805,804).

123. The WO 96/27155 (PCT) publication was material to the patentability of
claims 2-129 of the '861 Patent application (SN 08/805,804).

124. The '987 Patent was material to the patentability of claims 29-129 of the
• 861 Patent application" (SN08/8©5;804): ~-

125. One or more of the '861 Patent applicants knew, while the '861 Patent
application (SN 08/805,804) was pending, of the July 1995 publication of the Sibert article.

126. On information and belief, one or more of the '861 Patent applicants knew,
while the '861 Patent application (SN 08/805,804) was pending, of the September 1996
publication of the WO 96/27155 (PCT) publication.

127. On information and belief, one or more of the '861 Patent applicants knew,
while the '861 Patent application (SN 08/805,804) was pending, of the June 8, 1999 issuance of
the '987 Patent.

docssv1:160096.1 microsoft corporation's amended answer and

Counterclaims to intertrust's third amended
"14" complaint: Case No. C 01-1640 SBA

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128. On information and belief, one or more of the attorneys who prosecuted or
assisted in prosecuting the *861 Patent application (SN 08/805,804) knew, while that application
was_ pending, of the July 1 995 publication of the Sibert article.

129. One or more of the attorneys who prosecuted or assisted in prosecuting the
'861 Patent application (SN 08/805,804) knew, while that application was pending, of the .
September 1996 publication of the WO 96/27155 (PCT) publication.

1 30. One or more of the attorneys who prosecuted or assisted in prosecuting the
*861 Patent application (SN 08/805,804) knew, while that application was pending, of the June 8,
1999 issuance of the '987 Patenr

131. The applicants for the *861 Patent did not cite the Sibert article to the
Patent Office as prior art to any of claims 1-129 of the '861 Patent application (SN 08/805,804).

1 32. The applicants for the '861 Patent did not cite the WO 96/271 55 (PCT)
publication to the Patent Office as prior art to any of claims 1-129 of the ' 861 Patent application
(SN 08/805,804).

133. The applicants for the '861 Patent did not cite the '987 Patent to the Patent
Office as prior art to any of claims 1-129 of the '861 Patent application (SN 08/805,804).

134. The applicants for the '861 Patent did not cite to the Patent Office as prior
art to any of claims 1-129 of the '861 Patent application (SN 08/805,804) any reference having
the same or substantially the same disclosure as the Sibert article.

135. The r applicants for the -Sei^ent did not cite to the Patent Office as prior
art to any of claims 1-129 of the '861 Patent application (SN 08/805,804) any reference having
the same or substantially the same disclosure as the WO 96/27155 (PCT) publication.

136. The applicants for the '861 Patent did not cite to the Patent Office as prior
art to any of claims 1-129 of the '861 Patent application (SN 08/805,804) any reference having
the same or substantially the same disclosure as the '987 Patent.

137. The Sibert article is not merely cumulative over any reference cited as prior
art during the prosecution of the '861 Patent application (SN 08/805,804).

DOCSSVl; 160096.1 MICROSOFT CORPORATION'S AMENDED ANSWER AND

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COUNTERCLAIMS TO INTERTRUST'S THIRD AMENDED

complaint: Case No. C 01-1640 SBA

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XP

138. The WO 96/27 1 55 (PCT) publication is not merely cumulative over any
reference cited as prior art during the prosecution of the '861 Patent application (SN 08/805,804).

139. The '987 Patent is notjnerely cumulative over any reference cited as prior
art during the prosecution of the '861 Patent application (SN 08/805,804).

1 40. On information and belief, one or more of the *86 1 Patent applicants
believed, during pendency of claim 1 of the *861 Patent application (SN 08/805,804), that the
Sibert article disclosed an embodiment of claim 1 of the *861 Patent application (SN 08/805,804).

141 . InterTrust contends that none of the '861 Patent applicants believed, during
pendency of claim 1 of therWfcPatent application (SN 08/805,804), that the Sibert article
discloses an embodiment of claim 1 of the *861 Patent application (SN 08/805,804).

1 42. On information and belief, one or more of the '86 1 Patent applicants
believed, during pendency of claim 1 of the '861 Patent application (SN 08/805,804), that the
WO 96/271 55 (PCT) publication disclosed an embodiment of claim 1 of the '861 Patent
application (SN 08/805,804).

143. InterTrust contends that none of the '861 Patent applicants believed, during
pendency of claim 1 of the '861 Patent application (SN 08/805,804), that the WO 96/27155
(PCT) publication discloses an embodiment of claim 1 of the '861 Patent application (SN
08/805,804).

144. On information and belief, one or more of the "861 Patent applicants
believed; while the '861 Patent application (SN 08/805,804) was pending, that the Sibert article
was material to the patentability of claims 1-129 of the '861 Patent application (SN 08/805,804),
but, with deceptive intent, failed to disclose that reference as prior art to the Patent Office.

1 45. On information and belief, one or more of the '861 Patent applicants
believed, while the '861 Patent application (SN 08/805,804) was pending, that the WO 96/27155
(PCT) publication was material to the patentability of claims 1-129 of the '861 Patent application
(SN 08/805,804), but, with deceptive intent, failed to disclose that reference as prior art to the
Patent Office.

DOCSSV1:160096.1

Microsoft Corporation's Amended Answer and
Counterclaims to intbrtrust's third amended
complaint: CaseNo. C 01-1640 SBA

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146. On information and belief, one or more of the '861 Patent applicants
believed, while the '861 Patent application (SN 08/805,804) was pending, that the '987 Patent
was mat erial to the patentability of claims 29-129 of the '861 Patent application (SN 08/805,804),
but, with deceptive intent, failed to disclose that reference as prior art to the Patent Office.

147. The '861 Patent is unenforceable due to the inequitable conduct of the '861
Patent applicants and/or agents before the Patent and Trademark Office in connection with the
'861 Patent application (SN 08/805,804).

148. An actual controversy, within the meaning of 28 U.S.C. §§ 2201 and 2202,

exists between Microsoft, on the one hand, and InterTrust, on the other hand, with respect to

whether the claims of the '861 Patent are enforceable.

COUNT X - DECLARATORY JUDGMENT
OF UNENFORCEABILITY OF THE '900 PATENT

149. Microsoft repeats and realleges paragraphs 1 -5 of its Counterclaims, as if
fully restated herein.

1 50. The application and issued claims of the '900 Patent were not and are not
entitled to die benefit of any application filing date prior to August 30, 1996, under 35 U.S.C. §
120 or otherwise.

151. Microsoft repeats and realleges paragraphs 3 1 -32 of its Counterclaims, as if
fully restated herein. .

152. The-Sibert article-is-priorartto the applicationand issued-Clauns of the

'900 Patent under 35 U.S.C. § 102(b).

153 . The Sibert article was material to the patentability of application and issued
claims of the '900 Patent, including, for example, issued claims 86 and 1 82.

154. One or more of the '900 Patent applicants knew of the July 1995
publication of the Sibert article while the '900 Patent application (SN 08/706,206) was pending.

155. On information and belief, one or more of the attorneys who prosecuted or

assisted in the prosecution of the '900 Patent application (SN 08/706,206) knew of the July 1995

publication of the Sibert article while the '900 Patent application was pending.
docssvl: 160096.1 microsoft corporation's amended answer and

Counterclaims to intertrust's third amended
"1 7* complaint: Case No. C 01-1640 SBA

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1 56. The applicants for the '900 Patent did not cite the Sibert article to the
Patent Office as prior art to any claims of the l 900 Patent application (SN 08/706,206).

1 57. The applicants for the ' 900 Patent did not cite to the Patent Office as prior
art to any claims of the '900 Patent application (SN 08/706,206) any reference having the same or
substantially the same disclosure as the Sibert article.

158. The Sibert article is not merely cumulative over any reference cited as prior
art during the prosecution of the '900 Patent application (SN 08/706,206).

159. On information and belief, one or more of the '900 Patent applicants
believed, during pendency of claim t of-the '900 Patent-application (SN 08/706,206), that the
Sibert article disclosed an embodiment of claim 1 of the '900 Patent application (SN 08/706,206).

1 60. On information and belief, one or more of the '900 Patent applicants
believed, while the '900 Patent application (SN 08/706,206) was pending, that the Sibert article
was material to the patentability of various claims of the '900 Patent application (SN 08/706,206),
but, with deceptive intent, failed to disclose that reference as prior art to the Patent Office.

161. The '900 Patent is unenforceable due to the inequitable conduct of the '900
Patent applicants before the Patent and Trademark Office in connection with the '900 Patent
application (SN 08/706,206).

162. An actual controversy, within the meaning of 28 U.S.C. §§ 2201 and 2202,
exists between Microsoft, on the one hand, and InterTrust, on the other hand, with respect to
whether meijlaim^

COUNT XI - DECLARATORY JUDGMENT OF UNENFORCEABILITY

163. Microsoft repeats and realleges paragraphs 1-5 and 30-85 of its
Counterclaims, as if fully restated herein.

164. The '891 Patent, the '912 Patent, the '683 Patent, the '193 Patent, the '861
Patent, and the '900 Patent are referred to as the Count XI Patents.

1 65 . In prosecuting, marketing, and enforcing the Count XI Patents, InterTrust

has engaged in a pattern of obfuscation as to the scope of the patents, the prior art to the patents,

and the alleged "inventions" of the patents. For example, InterTrust has accused non-infringing
docssv1:1600%.1 microsoft corporation's amended answer and

Counterclaims to intertrust's third amended
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products of infringement, has buried Patent Office Examiners with a collection of more than 400
eferences, many of which were not related to the particular claims in issue, and has buried the
Examiners with hundreds or thousands of pages of redundant, verbose, unclear text, effectively
jrohibiting a real comparison of the alleged "invention" versus the prior art. This pattern of
ntentional conduct constitutes an abuse of the patent system, unclean hands, misuse and illegal
jxtension of the patent right, rendering the Count XI patents unenforceable, as well as invalid
inder Section 112.

166. An actual controversy, within the meaning of 28 U.S.C. §§ 2201 and 2202,

;xists between Microsoft,-on the one iand, and- InterTrust, on the other hand, with respect to

whether the claims of the '891 Patent, the '912 Patent, the '683 Patent, the '193 Patent, the '861

Patent, and the '900 Patent are enforceable.

COUNT XD - INFRINGEMENT
OF U.S. PATENT NO. 6.049.671

1 67. Microsoft repeats and realleges paragraphs 2-3 of its Counterclaims, as if
fully restated herein.

168. This Court has exclusive subj ect matter jurisdiction over Microsoft's cause
jf action for patent infringement under Title 28, United States Code, Sections 1331 and 1338, and
under the patent laws of the United States, Title 35 of the United States Code.

1 69. U.S. Patent No. 6,049,671 ("the '671 Patent") issued to Microsoft
Corporation as the assignee noFBenjamin W. SlivkaandJeffrey S. Webber on April 11, 2000.

1 70. A true copy of the *671 Patent is attached as Exhibit C to Microsoft's
counterclaims filed in response to InterTrust's Second Amended Complaint, and is incorporated
herein by reference.

171. Microsoft owns all right, title and interest in the '671 Patent.

1 72. InterTrust has had actual notice of the '67 1 Patent

1 73. InterTrust has irifringed one or more claims of the '671 Patent, in violation
of at least 35 U.S.C. § 271(a, b, c).

DOCSSV1-.160096.1

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Microsoft Corporation's Amended Answer and
Counterclaims to djtertrust 's third amended
complaint: Case No. C 01-1640 SBA

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174. InterTrust's infringement of the *671 Patent has caused and will continue to

cause Microsoft damage, including irreparable harm for which it has no adequate remedy at law.

COUNT XHI- INFRINGEMENT

OF U.S. PATENT NO. 6.256.668

1 75. Microsoft repeats and realleges paragraphs 2-3 and 91 of its Counterclaims,
as if fully restated herein.

1 76. U.S. Patent No. 6,256,668 Bl ("the '668 Patent") issued to Microsoft
Corporation as the assignee of Benjamin W. Slivka and Jeffrey S. Webber on July 3, 2001.

r. ■ :- - - - 177. A true^copy of foe '66B-Patent is*ttached as Exhibit D to Microsoft's
counterclaims filed in response to InterTrust's Second Amended Complaint, and is incorporated
herein by reference.

178. Microsoft owns all right, title and interest in the '668 Patent

179. InterTrust has had actual notice of the '668 Patent.

1 80. InterTrust has infringed one or more claims of the '668 Patent, in violation
of at least 35 U.S.C. § 271(a, b, c).

181.. InterTrust's infringement of the ' 668 Patent has caused and will continue to
cause Microsoft damage, including irreparable harm for which it has no adequate remedy at law.

PRAYER FOR RELIEF
WHEREFORE, Microsoft prays for the following relief:

A. The-GourtFenter judgment against InterTrust, and dismiss with prejudice,
any and all claims of the Third Amended Complaint;

B. The Court enter judgment declaring that Microsoft has not infringed,
contributed to infringement of, or induced infringement of the '683 Patent;

C. The Court enter judgment declaring that Microsoft has not infringed,
contributed to infringement of, or induced infringement ofthe'193Patent;

D. The Court enter judgment declaring that Microsoft has not infringed,
contributed to infringement of, or induced infringement of the '504 Patent;

E. The Court enter judgment declaring that Microsoft has not infringed,
docssv1:160096.1 microsoft corporation's amended answer and

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contributed to infringement of, or induced infringement of the '861 Patent;

F. The Court enter judgment declaring that Microsoft has not infringed,
contribut ed to infringement of, or induced infringement of the '900 Patent;

G. The Court enter judgment declaring that Microsoft has not infringed,
contributed to infringement of, or induced infringement of the '891 Patent;

H. The Court enter judgment declaring that Microsoft has not infringed,
contributed to infringement of, or induced infringement of the '912 Patent;

- ... — ^=r---rj— The Court ^^enterjudgment declarmg that the ' 193rpatent is invalid;

K. The Court enter judgment declaring that the ' 504 Patent is invalid;

L. The Court enter judgment declaring that the '861 Patent is invalid;

M. The Court enter judgment declaring that the '900 Patent is invalid;

N. The Court enter judgment declaring that the '891 Patent is invalid;

O. The Court enter judgment declaring that the '912 Patent is invalid;

P. The Court enter judgment declaring that the '861 Patent is unenforceable
due to inequitable conduct;

Q. The Court enter judgment declaring that the ' 900 Patent is unenforceable
due to inequitable conduct;

R. The Court enter judgment declaring that each of the '891 Patent, the '912
PatenVtihe--683=Patent, : the '193 Patent, the '861 Patent and the '900^Patent is unenforceable due
to an abuse of the patent system, unclean hands, and misuse and illegal extension of the patent
right;

S. The Court enter judgment that InterTrust has infringed the '671 Patent;
T. The Court enter judgment that InterTrust has infringed the '668 Patent;
TJ. The Court enter a permanent injunction prohibiting InterTrust, its officers,

agents, servants, employees, and all persons in active concert or participation with any of them
from infringing the '671 and '668 Patents;

I.

The Court enter judgment declaring that the

'683 Patent is invalid;

///

DOCSSVl: 160096.1

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Microsoft Corporation's Amended Answer and
Counterclaims to intertrust's third amended
complaint: Case No. C 01-1640 SBA

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V. The Court award damages and attorney fees against InterTrust pursuant to

le provisions of 35 U.S.C §§ 284 and 285.

W. The CourLaward to Microsoft pre-judgment interest and the costs of this

ction.

X. The Court award to Microsoft its reasonable costs and attorneys' fees; and
Y. The Court grant to Microsoft such other and further relief as may be
leemed just and appropriate.

JURY DEMAND

Pursuant to Fed, R. Civ. P. 38(b), Defendant Microsoft Corporation demands a

rial by jury.

DATED: November 14, 2001

Of Counsel:

T. ANDREW CULBERT, Esq.
One Microsoft Way
Building 8

Redmond, WA 98052-6399
Phone: 425-882-8080

MARK R. WEINSTEIN

ORRICK HERRINGTON & SUTCLIFFE, LLP

1000 Marsh Road

Menlo Park, CA 94025

Telephone: 650-614-7400

STEVEN ALEXANDER
KRISTIN L. CLEVELAND
JAMES E. GERINGER
JOHN D. VANDENBERG
KLARQUIST SPARKMAN, LLP
One World Trade Center, Suite 1600
121 S.W. Salmon Street
Portland, OR 97204

-Telephone: (503) 226-7391 ~

Attorneys for Defendant
Microsoft Corporation

DOCSSV1:150096 J MICROSOFT CORPORATION'S AMENDED ANSWER AND

Counterclaims to intertrust's third amended
-22- complaint: Case No. C 01-1640 SBA

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DECLARATION OF SERVICE VIA ELECTRONIC MAIL AND U.S. MAIL

I am more than eighteen years old and not a party to this action. My place of
employment and business address is 1000 Marsh Road, Menlo Park, California 94025.
On November 14, 2001, 1 served:

MICROSOFT CORPORATION'S AMENDED ANSWER AND COUNTERCLAIMS TO
INTERTRUST'S THIRD AMENDED COMPLAINT

By transmitting a copy of the above-listed document(s) in PDF form via electronic mail Michael
H. Page at mhp@kvn.com, Christopher P. Isaac at chris.isaac@finDegan.com, Stephen E.
Taylor at staylor@tcolaw.com and James E. Geringer at james.geringer@klarquist.com and

also by placing true and correct copies of the above documents in an envelope addressed to:

John W. Keker, Esq.
Michael H. Page, Esq.
KEKER & VAN NEST, LLP
710 Sansome Street
San Francisco, California 94111
Tel. No. 415-391-5400
Fax No. 415-397-7188
Email: jwk@kvn.com
Email: mhp@kvn.com

Attorneys for Plaintiff
INTERTRUST TECHNOLOGIES
CORPORATION

Stephen E. Taylor, Esq.

TAYLOR & CO. LAW OFFICES

"1050" Manrii Village Parkway^ SiiiteTOI

Alameda, CA 94501

Tel. No. 510-865-9401

Fax No. 510-865-9408

Email: staylor@tcolaw.com

Attorneys for Plaintiff
INTERTRUST TECHNOLOGIES
CORPORATION

Christopher P. Isaac, Esq.

FINNEGAN, HENDERSON, FARABOW,

GARRETT & DUNNER LLP

1300 1. Street, N.W.

Washington, DC 20005-3314

Tel. No. 202-408-4000

Fax No. 202-408-4400

Email: chris.isaac@finnegan.com

Attorneys for Plaintiff
INTERTRUST TECHNOLOGIES
CORPORATION

John D. Vandenberg, Esq.
James E. Geringer, Esq.
T KLARQUIST, SPARKMAN; CAMPBELL,
LEIGH & WHINSTON LLP
One World Trade Center
121 S. W. Salmon Street, Suite 1600
Portland, Oregon 97204
Tel. No: 503-226-7391
Fax No: 503-228-9446
Email: john.vandenberg@klarquist.com
Email: james.geringer@klarquist.com

Attorneys for Defendant and
Counterclaimant, MICROSOFT
CORPORATION

D0CSSVI:164899.1

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and sealing the envelope, affixing adequate first-class postage and depositing it in the U.S. mail
at Menlo Park, California.

Executed on November 14, 2001 at Menlo Park, California.

I declare under penalty of perjury that the foregoing is true and correct.

(SIGNATURE)

(PRINT NAME)

D0CSSV1:IM899.I

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